Leibniz-Institut fuer Neue Materialien gemeinnuetzige GmbH

Patent Trials and Appeals Board

Apr 27, 2021

2020003288 (P.T.A.B. Apr. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/366,015 06/17/2014 Peter William de Oliveira 911.0038 5173
25534 7590 04/27/2021
CAHN & SAMUELS LLP
1100 17th STREET NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
04/27/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER WILLIAM DE OLIVEIRA,
ELISABETE HENRIQUETTA SOARES DE CARVALHO MENEZES,
MOHAMMAD HOSSEIN JILAVI, and PETER KOENIG
Appeal 2020-003288
Application 14/366,015
Technology Center 1700
Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, AND
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2020-003288
Application 14/366,015

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 14, 15, 17, 18, 20–28, and 30.
Claims 2, 4–7, 11–13, 16, 19, and 29 have been cancelled. Claims 8–10 have
been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to an anti-reflective
coating that could be used, for example, as single-layer coating for large
volume solar cells. Spec. 1:5–25. Claim 1 is illustrative:
1. A composition for producing an antireflective coating,
comprising:
a) at least one hydrolyzable silane compound;
b) at least one fully hydrolyzed metal compound;
c) at least one organic compound comprising an aromatic
compound or a bidentate compound, said at least one organic
compound having at least two functional groups or precursors thereof
selected from the group consisting of amino group, carboxylic acid
groups, hydroxyl groups, and thiols; and
d) at least one solvent,
wherein the constituents a), b), and c) at least partly form a
coordination polymer,
and
wherein the at least one hydrolyzable silane compound is of the
formula

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Leibniz-Institut für Neue Materialien
gemeinnützige. Appeal Br. 1.
2 In this Decision, we refer to the Final Office Action dated March 11, 2019
(“Final Act.”), the Appeal Brief filed November 7, 2019 (“Appeal Br.”), the
Examiner’s Answer dated February 3, 2020 (“Ans.”), and the Reply Brief
filed March 31, 2020 (“Reply Br.”).
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Application 14/366,015

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R1aSiX4-a (I)
wherein R1 comprises one or more nonhydrolyzable radicals; X
comprises one or
more hydrolyzable radicals; and a is 0, 1, or 2 and
wherein the at least one fully hydrolyzable metal compound
comprises a metal selected from the group consisting of B, Sn, Ti, Zr,
and V,
wherein a molar ratio of silicon to metal ion in the compounds
a) and b) is between 100:1 and 1:2.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Karkkainen US 2005/0277274 A1 Dec. 15, 2005
Schubert et. al
(“Schubert”)
US 2009/0305040 A1 Dec. 10, 2009
Varaprasad US 2010/0024874 A1 Feb. 4, 2010
Hechun CN 201010543475 May 18, 2011
Sanchez, et al., Applications of advanced hybrid organic-inorganic
nanomaterials: from laboratory to market, Chem. Soc. Rev., 2011, 40,
696–753 (“Sanchez”).

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 3, 14, 15, 17, 18, 20–28, and 30 under 35 U.S.C. § 112 as
failing to comply with the written description requirement. Ans. 3.
B. Claims 1, 3, 14, 15, 17, 18, 20–28, and 30 under 35 U.S.C. § 112 as
indefinite. Id. at 4.
C. Claims 1, 3, 14, 17, 18, 20–22, 24–28, and 30 under 35 U.S.C. § 103
as obvious over Karkkainen in view of Hechun, Sanchez, and
Schubert. Ans. 5.
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D. Claims 15 and 23 under 35 U.S.C. § 103 as obvious over Karkkainen
in view of Hechun, Sanchez, Schubert, and Varaprasad. Id. at 10.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejections A and B, written description and indefiniteness. The
Appeal Brief does not dispute the merit of these rejections. Appeal Br. 3.
Appellant provides some argument disputing the rejections’ merit in the
Reply Brief. Reply Br. 1–2. We do not, however, consider these arguments
because they are untimely and Appellant does not establish good cause for
the Board to consider them. 37 C.F.R. § 41.41(b)(2) (“Any argument raised
in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer . . . will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
Because Appellant does not identify reversible error, we sustain these
rejections.
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Rejection C, obviousness over Karkkainen, Hechun, Sanchez,
Schubert. The Examiner rejects claims 1, 3, 14, 17, 18, 20–22, 24–28, and
30 under 35 U.S.C. § 103 as obvious over Karkkainen in view of Hechun,
Sanchez, and Schubert. Ans. 5.
The Appellant argues each claim subject to this rejection in a group.
We therefore limit our discussion to claim 1, which is representative of the
group. The remaining claims stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(iv)(2013).
The Examiner finds, for example, that Karkkainen teaches a
composition comprising (a) a hydrolyzable silane, (b) hydrolyzable titanium,
and (c) a functional organic compound. Ans. 5–6 (citing Karkkainen). The
Examiner finds that the combination of these components yields a
coordination polymer between (a), (b), and (c). Id. at 6. The Examiner
additionally finds that Karkkainen teaches using water to perform the
hydrolysis reaction. Id. at 7.
The Examiner also finds, for example, that Karkkainen does not
explicitly teach a molar ratio of silicon and metal ions but finds that Hechun
teaches that metal and silicon compounds provide antireflective properties
and that ratio of the compounds may be adjusted to control refractive index.
Id. at 7–8 (citing Hechum). The Examiner determines that it would have
been obvious to adjust the relative amount of silicon and metal in
Karkkainen to optimize overall refractive index. Id.
Appellant argues that Karkkainen does not teach a coordination
polymer formed from a silane compound, a hydrolysable metal compound,
and an organic compound. Appeal Br. 5; Reply Br. 5–6. The preponderance
of the evidence, however, supports the Examiner’s position that Karkkainen
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suggests such a polymer. In particular, Karkkainen teaches a precursor
formed from metal oxides where the metal can be selected from, for
example, titanium or silicon. Karkkainen ¶¶ 43–47. Karkkainen also teaches
that more than one metal can be combined thus reaching (a) and (b) of
claim 1. Id. ¶ 32. Karkkainen further teaches providing an organic
compound with functional groups that satisfies (c). Id. ¶ 33; see also Ans. 8–
10 (finding that Karkkainen teaches a bidente compound and further
determining that it would have been obvious to use the aromatic or bidente
organic compounds taught by Hechun, Sanchez, or Shubert). Karkkainen
teaches that its “reaction product” is formed from the organic compound
“coordinated to” the metal precursor. Karkkainen ¶ 38. This passage is best
understood as teaching that the Karkkainen “reaction product” is a
coordination polymer. See Spec. 2:4–16 (describing coordination polymers);
Ans. 15.
Moreover, our reviewing court has held that where “the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.” In re Best, 562 F.2d
1252, 1255 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.”). Here, Karkkainen’s reacting of (a), (b), and
(c) is a substantially identical to Appellant’s claim. Appellant identifies no
persuasive technical reasoning or evidence why Karkkainen’s reaction
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product combining (a), (b), and (c) would not result in a coordination
polymer just as Appellant’s claim recites.
Appellant also argues that claim 1’s recited solvent is lacking because
Karkkainen removes solvent prior to polymerization. Appeal Br. 5–6. We
agree with Appellant that Karkkainen, at one point in its text, suggests
removing solvent prior to at least some polymerization steps. Karkkainen ¶¶
56–60. Karkkainen’s “reaction product,” however, coexists with solvent. Id.
¶¶ 38–41. As explained above, the preponderance of the evidence supports
that the reaction product is a coordination polymer. Moreover, even if it is
only Karkkainen’s later product that forms a coordination polymer, we note
that removal of Karkkainen’s solvent is optional. Id. ¶ 41 (“the intermediate
product is capable of polymerizing under the influence of heat and
optionally evaporation of solvent” (emphasis added)).
Appellant further argues that Hechun does not teach or suggest claim
1’s broadly recited molar ratio. 6–7; see also id. at 13 (Claims App.)
(reciting a silicon to metal ion ratio “between 100:1 to 1:2”). It has long been
held, however, that “where the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955);
see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art.”). Here, Hechun teaches that coatings control
refractive index and that ratio of components allows adjustment of refractive
index. Hechun ¶¶ 4–9, 28. Thus, discovery of an optimal ratio would have
been within the skill of the art and is not inventive.
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Appellant argues that Hechun’s teachings are not relevant to
Karkkainen because Hechun involves a silicon sol whereas Karkkainen is
not a sol gel. Appeal Br. 7. The Examiner, however, makes use of Hechun’s
general teachings regarding adjusting amounts of silicon and metal alkoxide
components that Karkkainen already includes. Ans. 19. There is no
incompatibility because the Examiner does not use silicon sol from Hechun
in the rejection and because, as the Examiner explains, Karkkainen does not
teach away from the silicon sols of Hechun. Id.
Appellant also argues that Hechun is not compatible with Karkkainen
because Karkkainen requires high refractive index coatings whereas Hechun
requires a low refractive index coating and because of different process
temperatures. Id. at 7–10. As the Examiner explains, however, Karkkainen’s
teachings are not limited to high refractive index coatings. Ans. 20–21. Also,
the evidence of record does not suggest that temperature impacts refractive
index. Rather, Hechun teaches that composition controls refractive index
(Hechun ¶ 28), and it is this teaching that the Examiner relies upon.
Because Appellant does not persuasively identify any reversible error,
we sustain this rejection.
Rejection D, obviousness over Karkkainen, Hechun, Sanchez,
Schubert, Varaprasad. The Examiner rejects claims 15 and 23 under 35
U.S.C. § 103 as obvious over Karkkainen in view of Hechun, Sanchez,
Schubert, and Varaprasad. Ans. 10. Appellant selects claim 23 as
representative. Appeal Br. 11. We thus focus on claim 23, and the same
outcome applies to claim 15. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Claim 23 recites, “The composition as claimed in claim 1, wherein a
is 1 or 2.” Appeal Br. 15 (Claims App.). The Examiner finds that
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Karkkainen, as modified in Rejection C, does not disclose that the silane
compound includes a non-hydrolyzable group (i.e., a of claim 1’s formula
being non-zero). Ans. 10–11. The Examiner finds, however, that Varaprasad
teaches a mixed metal oxide antireflective coating of titanium and silicon
alkoxide compounds and teaches that a suitable precursor is silane
compounds with non-hydrolyzable groups having a equal to 1 as in claim 23.
Id. (citing Veraprasad) The Examiner determines that it would have been
obvious to use a non-hydrolzable group containing silane as the silane
precursor in modified Karkkainen as taught by Varaprasad “because these
compounds result in silica/siloxane components (as called for by
Karkkainen) in a titanium/silicon oxide coating with antireflective properties
(as called for by Karkkainen) and which also may inhibit fouling.” Id. at 11.
Appellant argues that Varaparasad does not overcome the deficiencies
of the other references. Appeal Br. 11. This argument is unpersuasive for the
reasons we provide when addressing Rejection C.
Appellant also argues that there is no reason why a person of ordinary
skill in the art would not have substituted metal alkoxide compounds of
Karkkainen with silane compounds of Varaprasad. Appeal Br. 11. Appellant
argues that Varaprasad does not support that silane compounds inhibit
fouling. Id.; Reply Br. 6–7. The Examiner, however, finds that both
Varaprasdad and Karkkainen are directed to antireflective coatings based on
a mixed metal oxides of silicon and titanium alkoxide. Ans. 23. Appellant
does not persuasively dispute this point. The Examiner concludes that a
person of skill in the art would have understood that Varaprasad’s
phenyltriethyoxysilane is known suitable silicon alkoxide for antireflective
properties as Karkkainen desires. Id. A person of skill in the art would have
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predictably made such a substitution given the component’s known function
in the art as taught by Varaprasad. We, thus, sustain this rejection.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 14, 15,
17, 18, 20–
28, 30
112 written description 1, 3, 14, 15,
17, 18,
20–28, 30

1, 3, 14, 15,
17, 18, 20–
28, 30
112 definiteness 1, 3, 14, 15,
17, 18,
20–28, 30

1, 3, 14, 17,
18, 20–22,
24–28, 30
103 Karkkainen, Hechun,
Sanchez, Schubert
1, 3, 14, 17,
18, 20–22,
24–28, 30

15, 23 103 Karkkainen, Hechun,
Sanchez, Schubert,
Varaprasad
15, 23
Overall
Outcome
1, 3, 14, 15,
17, 18,
20–28, 30

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED